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A light-touch informative conversation can accomplish a lot more than a traditional law firm ‘nastygram’ or impersonal take-down notice

When dealing with intellectual property rights enforcement, taking abrupt action is often essential to ensure a product or trademark isn’t infringed in a way that is detrimental to the copyright owner.

There are of course, other, more customer-focused rights enforcement techniques that ensure trademark and copyright owners can responsibly enforce their rights, without lawsuits.

Allisen Pawlently-Altman, former Amazon corporate counsel and new partner at Kilpatrick Townsend & Stockton, has worked closely with client-focused teams for global consumer products, entertainment, media and hospitality brands.

During her role at Amazon, Pawlently-Altman led the in-house team responsible for all IP enforcement the original content business.

She regularly advised business leadership on customer-focused rights enforcement, and still believes that these types of enforcement actions can sometimes accomplish a lot more than others.

“It all depends on the type of infringement and the sophistication of the other party,” she says.

“I’ve dealt with many cases where the infringing party wasn’t necessarily acting in bad faith and perhaps simply didn’t realise they were doing anything illegal. In those cases, a light-touch informative conversation can accomplish a lot more than a traditional law firm ‘nastygram’ or impersonal take-down notice.”

“Plus, it can help to educate would-be infringers and maintain a tone of civility in enforcement matters. Rights holders need to walk a fine line between protecting their content and nurturing a vibrant and enthusiastic fan base.”

Corynne McSherry, legal director at the Electronic Frontier Foundation (EFF), notes that rights holders can be “smart and strategic ... they can make sure to take care that they understand the limits of their rights”.

“If you aren’t happy with how someone is using your mark, make sure the use is really infringing. Is it protected by fair use or the first amendment? Don’t wait until your target raises the issue, consider whether this is a real threat worth pursuing. Many trademark owners have the mistaken notion that if they don’t go after every use they lose their rights. This is not true.”

McSherry doesn’t believe that everyone who infringes should be called an ‘infringer’. “Often, someone is using content and may or may not be infringing depending on the circumstance—a rights holder may see that person as an infringer, but a court might see it differently,” she says.

“As I see it, users of all stripes and rights holders of all stripes need education so infringement doesn’t happen and if it does, it gets an appropriate response.”

As legal director of the EFF, McSherry has dealt with various instances of rights enforcement and defended and testified in the Digital Millennium Copyright Act (DMCA) disputes.

One of highest profile cases McSherry has been involved in is the infamous ‘Dancing Baby’ YouTube copyright case. It has gone all the way to the Supreme Court, which could consider the appeal.

The argument against infringement, in this case, was that the Dancing Baby video was covered by fair use and that “rights holders who force down videos and other online content for alleged infringement—based on nothing more than an unreasonable hunch, or subjective criteria they simply made up—must be held accountable,” wrote McSherry in a petition on the case.

McSherry says that in most cases, fair use is not complicated. “Many uses are clearly fair, and many are clearly not.”

“There’s a relative small area where it can be complicated, but we shouldn’t over-state it.”

“That said, of course the internet and new technology has made it easier for folks to recontextualise, comment on, and share creative works. It makes fair use more important than ever, because it has become the underpinning for an explosion of creativity.”

According to McSherry, legal threats based on fair use, or use of materials in the public domain may not be necessary.

“Sometimes an issue can be resolved with a phone call. Sometimes we have to go to court.”

“The difficulty is that our clients tend to be folks who cannot afford legal counsel and feel intimidated by the process.”

“There aren’t a lot of pro bono IP lawyers out there to help them navigate it. So we try to encourage content holders to be more careful about where and how they invoke their copyrights, so improper take-downs and threats are rare.”

“Right now they are still far too common,” according to McSherry.

Pawlently-Altman and McSherry coalesce in the opinion that fair, customer-focused rights enforcements fits the current internet environment better than the ‘notice-and-takedown’ systems of the DMCA, but it is clear that there is still a long way to go in terms of educating both rights holders and users.

As positive and creative aspects of fair use, such as fan fiction or game modifications, become more prevalent in society, enforcement actions will need to be updated, or they will only face continued criticism from those who wish to create a more user-oriented online society.

Until then, when it comes to rights enforcement, legal counsel and representatives might opt for a more measured approach.
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